4. Procedural aspects
4.1. Filing a request for apportionment of costs
The practice before the boards of appeal is that all requests by parties, including any requests as to costs, should be made before any decision is announced in oral proceedings, as the decision on apportionment is part of the final decision. See T 1556/14 of 15 October 2020 date: 2020-10-15, where the board held that R. 88(1) EPC implied that the request for apportionment was submitted before the decision of the opposition division was taken. Where a request for apportionment cannot be submitted before termination of the proceedings, for example when the only appeal is withdrawn and the timing of that withdrawal or other related circumstances are the alleged grounds for requesting apportionment of costs, the request must be accepted as being admissible despite being submitted after termination of the proceedings (T 1556/14 of 15 October 2020 date: 2020-10-15). However, in the case in hand the board was not convinced that the appellant had been unable to file a request for apportionment of costs prior to the termination of the proceedings.
A different approach was taken in T 1484/19 of 4 July 2023 date: 2023-07-04 where the board left open whether and, if so, to what extent legal certainty imposed limitations as to the admissibility of a request for apportionment of costs filed after termination of the appeal proceedings. The board stated that by analogy to the withdrawal of an appeal, it could be argued that the decision T 1484/19 of 29 November 2022 date: 2022-11-29 brought the appeal proceedings to a close for the substantive merits of the appeal (which were no longer open for consideration in view of the respondent's withdrawal of its approval of any text for maintenance of the patent) while leaving ancillary questions open to a decision. Consequently, the board would have the power to decide on the request for apportionment of costs filed after the completion of the internal decision-making process.
There is no basis for deciding on a different apportionment of costs if the party which would benefit from the decision did not request apportionment and even made it known that it would not enforce any such decision (T 408/91, T 125/93).
In T 896/92 the request for a different apportionment of costs was rejected for lack of substantiation and because of the absence of obvious reasons. In T 193/87 (OJ 1993, 207) the board likewise refused to apportion costs because the respondent had provided no evidence and it was unable to see any reasons of equity that might have justified such an apportionment. In several decisions, the boards of appeal have stressed the importance of submitting evidence to support a request for a different apportionment of costs (e.g. T 49/86, T 193/87, T 212/88, OJ 1992, 28; T 404/89, T 523/89, T 705/90, T 776/90, T 306/93).
In T 967/18 the board pointed out that the request for apportionment filed under Art. 16(1) RPBA constituted an amendment of the appeal case and was subject to Art. 13(2) RPBA.
- T 0617/20
In T 617/20 the board summoned the parties to oral proceedings in person for 10 October 2024. With a letter dated 1 October 2024 the patent proprietor (sole appellant) withdrew its appeal, which was communicated to the respondent opponents on 2 October 2024. The board cancelled the oral proceedings on 4 October 2024 and informed the parties about the termination of the appeal proceedings on 10 October 2024. Opponent 3 submitted a request for apportionment of costs together with the supporting evidence on 12 November 2024, i.e. about one month later.
The patent proprietor argued that according to the relevant case law such a request was only admissible as long as the proceedings were not closed. Only exceptionally may a request be admissible after the termination of the proceedings (T 1556/14). However, in the present case opponent 3 was timely informed and therefore was not prevented from submitting the request before the closure of the proceedings.
The board held that the wording of Art. 16 RPBA, Art. 104(1) or R. 88(1) EPC did not support the proposition that requesting cost apportionment after the closure of the proceedings should be normally excluded as a question of principle, contrary to the findings of T 1556/14 (seemingly also approved by T 1484/19). At least since R 3/22 it had become clear that proceedings before a board of appeal may well come into existence also after the formal closure of the appeal proceedings. Decision T 695/18 found that the Enlarged Board's decision implied that such ancillary proceedings, though not re-opening the original appeal proceedings in substance, did in fact come into existence through a request submitted after the closure of the appeal proceedings (there a request for correction under R. 139 EPC). The same approach was confirmed in T 433/21.
In the board's opinion, there was no apparent reason why the same findings would not be transferable to the present issue. Thus, a request for apportionment submitted after the closure of the appeal proceedings would open ancillary proceedings, and there was no apparent reason why such ancillary proceedings would not be suitable to resolve also the issue on the merits, i.e. to decide whether a cost apportionment was equitable in the circumstances. Hence, the board concluded that the request was not inadmissible for the sole reason that it had been filed after the closure of the appeal proceedings.
Moreover, the board found that the request for apportionment of costs had been filed within a reasonable time. In this respect the board noted that it seemed sufficient to orient the expected reasonable time limit for filing a request for apportionment along the usual time limits applicable to proceedings before the EPO, namely the standard two months of R. 132(1) EPC. Questions should be asked only if the request is submitted after a reasonable period of time.
According to the board, beyond the general obligation to inform the other parties as soon as possible, a party had no formal obligation to take more active steps merely to avoid such costs which were already foreseen by the other parties. At most, in procedural situations such as the present case, the parties must endeavour to avoid additional costs, typically by informing the other parties as soon as the firm decision to withdraw the appeal has been taken. To recognise such a formal obligation (i.e. to take active steps already before the decision to withdraw has been taken, in order to avoid costs for the other party) seemed to place an unrealistic burden on parties to proceedings before the EPO.
For these reasons, the board concluded that the parties were to bear their own costs (Art. 104(1), first half-sentence, EPC). The request for a different apportionment of costs was not belated but there were no apparent reasons of equity that would justify a different apportionment.